[00:00:00] Speaker 03:
Okay, our third case this afternoon is number 13-1527, Western Gecko LLC versus Ion Geophysical.

[00:00:12] Speaker 02:
Mr. Healy.

[00:00:17] Speaker 02:
May I please report?

[00:00:19] Speaker 02:
My name is David Healy and I represent Ion Geophysical.

[00:00:23] Speaker 02:
Two and a half years ago, we raised the problem

[00:00:30] Speaker 02:
that Western GECO did not have an assignment or other ownership of these patents.

[00:00:37] Speaker 02:
We filed motions in the district court after going back and forth with them for several weeks.

[00:00:42] Speaker 02:
We filed a motion in this court.

[00:00:44] Speaker 02:
They control all the evidence.

[00:00:46] Speaker 02:
Dr. Biddleston still works for whether it's Western GECO or an affiliated company.

[00:00:53] Speaker 02:
They have the documents.

[00:00:55] Speaker 02:
They have everything.

[00:00:56] Speaker 02:
And yet in two and a half years, they've come up with nothing.

[00:01:00] Speaker 02:
There's one written assignment for each inventor.

[00:01:03] Speaker 02:
That written assignment is to Schlumberger Technology Corporation.

[00:01:08] Speaker 02:
That written assignment is filed in the patent office records and is entitled to a presumption that that is the assignment that controls.

[00:01:19] Speaker 02:
And that assignment shows that this plaintiff had no authority and no standing and no jurisdiction in the court

[00:01:29] Speaker 02:
to pursue claims on the three Biddleston patents, which are really what the fight's about.

[00:01:34] Speaker 02:
That's where all the money is.

[00:01:37] Speaker 02:
That's the lost profits is entirely in the Biddleston patents, and even the bulk of the reasonable royalty are in the Biddleston patents.

[00:01:47] Speaker 02:
So it's practical matter.

[00:01:48] Speaker 02:
That's really where we are in terms of the relief that's needed for my client.

[00:01:57] Speaker 02:
And as a practical matter,

[00:01:59] Speaker 02:
if they had evidence that they were the S&E, that they owned this patent, it would have come out in the last two and a half years.

[00:02:08] Speaker 03:
There is a chain of title that they argue for that would give them the patent.

[00:02:17] Speaker 02:
Yes, Your Honor.

[00:02:18] Speaker 02:
And I think your opinion in this fine solutions case versus New Basis as well as your opinion Monday in the Warsaw

[00:02:28] Speaker 02:
bring up an important point here, and that is you can't just mush together corporate entities.

[00:02:37] Speaker 02:
In Warsaw Pact, we saw these corporate entities that carefully structured relationships that included various motivations, inspired solutions.

[00:02:47] Speaker 02:
They were just mushed together.

[00:02:49] Speaker 02:
And in both cases, the court held that you could not just disregard the corporate structure.

[00:02:58] Speaker 04:
And what we have here is, if you look at their referee, they say both inventors assign... You're complaining about the Western Geco's control of the documentation, which says to me what I think, which is that this is a question of fact, whether they have ownership of the title is a question of fact.

[00:03:23] Speaker 04:
And we review it under that standard.

[00:03:25] Speaker 04:
Is that not correct?

[00:03:27] Speaker 02:
Ordinarily so, Your Honor, but here, because the title, the chain of title, is based on contracts, that's a question of law that's reviewed de novo.

[00:03:39] Speaker 02:
The inception of the chain of title is testimony, but that testimony doesn't even say who the contracts with.

[00:03:48] Speaker 02:
They say it was with Dico Praqua.

[00:03:52] Speaker 02:
There is no Dico Praqua as a standalone corporation.

[00:03:58] Speaker 02:
There are, in their cost-sharing agreements, seven companies named GECO Profile, a UK company, and a national company, and various others.

[00:04:08] Speaker 02:
There are nine companies, including a Norwegian company, and this happened in Norway with Mr. Hilleson, named GECO.

[00:04:17] Speaker 02:
They don't even know, or they can't even take a position, on who the assignment was made to, let alone what the assignment said, let alone

[00:04:28] Speaker 02:
what exactly was assigned.

[00:04:29] Speaker 02:
And as we've seen in the Stanford versus Roche case, that's critical.

[00:04:34] Speaker 03:
They're saying the inventors had testified that they had agreements to assign the patents and then there's a 1998 agreement and there's a 2000 agreement which seemed to transfer the patents.

[00:04:50] Speaker 02:
Let me address that quickly because that is something that doesn't transfer the patents.

[00:04:57] Speaker 02:
and it doesn't for a few reasons.

[00:05:00] Speaker 02:
Both the 1998 cost sharing and 2000 let me address first because they're worded almost the same.

[00:05:08] Speaker 02:
They almost look like the dupe and revise of each other.

[00:05:11] Speaker 02:
In those agreements, drafted under the Internal Revenue Code for some tax sharing purpose, any member of the group can hold legal title or any other person

[00:05:24] Speaker 02:
or nominee can hold legal title to the patent.

[00:05:27] Speaker 02:
It doesn't require transfer of legal title to whoever supposedly has the right to the patent.

[00:05:36] Speaker 02:
The second thing, Your Honor, is if you look at the termination clause, Schlumberger Limited, the head company in the Netherlands, Antilles, they have the right to license anyone at any time without restriction and to terminate

[00:05:53] Speaker 02:
any participant, and when they terminate a participant, especially under the 98 agreement, that participant loses all rights that they've been given, if any.

[00:06:06] Speaker 02:
At most, that agreement can do some kind of transfer of beneficial interest, but an assignment has to say it's an assignment, it has to transfer ownership, and it has to say who's getting the assignment.

[00:06:21] Speaker 02:
And that agreement doesn't say

[00:06:24] Speaker 02:
Who's going to be the legal title owner?

[00:06:26] Speaker 02:
In fact, it says any number of people can be the legal title owner.

[00:06:30] Speaker 02:
It says that the person at the top of the chain can license at will and can take away your property or terminate your interest in the property at will.

[00:06:41] Speaker 02:
That's not a valid assignment in Section 261.

[00:06:45] Speaker 02:
No, Your Honor.

[00:06:47] Speaker 02:
I'm saying that under patent law, to have an assignment, it's a transfer of ownership.

[00:06:53] Speaker 02:
And one, it's got to be by the patent owner.

[00:06:56] Speaker 02:
And so if the patent owner was Jito.

[00:06:59] Speaker 04:
The inventors say they did.

[00:07:02] Speaker 02:
The inventors say that when they started, and snippets of testimony that are very short, that that was their understanding, or that they signed something to that effect.

[00:07:18] Speaker 02:
Mr. Hilleson said it was to Jito.

[00:07:23] Speaker 02:
Dr. Biddleston, Sijiko Prakla, that's a group of up to nine corporations.

[00:07:28] Speaker 02:
We don't even know who the assignee is.

[00:07:30] Speaker 02:
But also, if you recall the Stanford Roche case and other cases, how that assignment is phrased and what's assigned is important.

[00:07:41] Speaker 02:
And for example, Mr. Hilleson testified that he was supposed to get some kind of bonus, depending on how important the patent was.

[00:07:49] Speaker 02:
They could have checked their records and at least seen which entity paid them the bonus.

[00:07:55] Speaker 02:
They could have seen, at least from the employment records, which entity you asked that question in discovery.

[00:08:03] Speaker 02:
No, Your Honor, because this was first learned after discovery for the reason that Western GECO on the patents that went to trial had filed the assignment

[00:08:18] Speaker 02:
but in the cover pages wrote that they were the AFSCME and the patents issued to Western GECO would be AFSCME published on the cover page.

[00:08:31] Speaker 04:
So we have a presumption question too?

[00:08:34] Speaker 02:
No, Your Honor, with all due respect, you can really only have one presumption at a time as to who owns it.

[00:08:41] Speaker 02:
And under Section 261, the assignment

[00:08:47] Speaker 02:
that's of record is presumed to be the owner.

[00:08:51] Speaker 02:
That was in the SIRF case that I believe Judge Stite also was on.

[00:08:56] Speaker 02:
And we can't have, in the same lawsuit, I get a presumption that Schlumberger Technology Company owns it, and they get a presumption that they own it.

[00:09:10] Speaker 02:
It's simply because by their own unilateral actions,

[00:09:17] Speaker 02:
they caused it to issue that way.

[00:09:20] Speaker 03:
Let's move on to F1 and F2.

[00:09:23] Speaker 03:
The jury was properly instructed with respect to F2 on the verdict forum.

[00:09:29] Speaker 03:
They found infringement under F2.

[00:09:32] Speaker 03:
And so quite apart from whether F1 has an intent requirement that wasn't recognized by the district court,

[00:09:43] Speaker 03:
in summary judgment, motion, or inclusion, F1 instructions doesn't really make any difference.

[00:09:49] Speaker 02:
I think it does, Your Honor, because this issue of whether this court had already decided that we were an infringer, which was based on no intent under F1, was something that was hotly disputed how and when the jury should be informed,

[00:10:13] Speaker 02:
And we wanted it to be done in the final instructions and in a way that was clear.

[00:10:20] Speaker 03:
So what's the error?

[00:10:22] Speaker 02:
The error here is that we asked for an instruction.

[00:10:25] Speaker 02:
We did ask for it at the conclusion of the F1 instruction that made very clear they could not use the F1 findings and the summary judgment under F1 and F2.

[00:10:40] Speaker 02:
At all.

[00:10:41] Speaker 02:
I can read you the... I read it.

[00:10:44] Speaker 03:
It was too broad.

[00:10:46] Speaker 03:
The instruction you asked for was too broad because it would have barred them from considering the intent to have the thing assembled abroad.

[00:10:58] Speaker 02:
But what it didn't make clear, Your Honor, is that even assuming the F-1 decision was correct, that we're talking about two different types of intent in the instruction.

[00:11:12] Speaker 03:
Yeah, I mean, if you'd asked for a narrower instruction, you might have an argument, but you asked for an instruction which basically said you can't mention the F-1 summary judgment.

[00:11:24] Speaker 02:
I seem to be going into my rebuttal time, but I think, Your Honor, that looking at the motion and limiting, the argument over the instructions as a whole and the final instruction, it was clear we were just trying to make it

[00:11:40] Speaker 02:
so that the jury would see there was no way that they were permitted to use that F-1 finding to find F-2 liability?

[00:11:50] Speaker 03:
So if we reject that argument, we find that F-2 liability was not infected by the disputes as to the F-1 issue, then we can affirm without reaching the F-1 issue, right, based on the finding of infringement with respect to F-2.

[00:12:11] Speaker 03:
well your honor we believe that i understand but i think that we will be rejected argument that you should have had an instruction uh... that they couldn't consider f one we reject your argument about the eliminate motion we reject your argument about counsel's argument if that's all true then there's then we we could sustain the judgment based on the finding of f2 liability without ever reaching f1 right your honor i'd

[00:12:40] Speaker 02:
disagree because of the change of the law that the comal opinion affected... No, I don't think you're answering my question, Mike.

[00:12:47] Speaker 02:
No, you could not, Your Honor, because under F2 or F1 we were entitled to raise... What was wrong with the F2 instructions?

[00:12:55] Speaker 03:
You didn't object to the F2 instructions, right?

[00:12:57] Speaker 02:
We didn't, but this was a change in the law that came along after.

[00:13:00] Speaker 02:
Well, what should he be instructed on F2 that he didn't?

[00:13:03] Speaker 02:
That he could have considered, and this is reflected in the Federal Circuit model jury instructions that are

[00:13:10] Speaker 02:
in use now, or available now, that you could consider a good faith belief in invalidity to be a good faith belief of no infringement.

[00:13:23] Speaker 03:
Okay.

[00:13:24] Speaker 03:
We'll save your two minutes of rebuttal time.

[00:13:26] Speaker 03:
Thank you.

[00:13:40] Speaker 03:
So explain to me how you can get profits under US patent law for profits made abroad.

[00:13:50] Speaker 00:
Sure, Your Honor.

[00:13:51] Speaker 03:
Under power integrations.

[00:13:53] Speaker 00:
Under power integrations, and I think what's an important distinction to start with is power integrations is a 271A case.

[00:13:58] Speaker 00:
This is a 271S case.

[00:14:01] Speaker 00:
But the question that presents itself in power integrations and in other cases is, is there an act of infringement?

[00:14:08] Speaker 00:
Step one.

[00:14:10] Speaker 00:
If there is an active infringement, then we look at under 284, the harm to the patentee for that active infringement.

[00:14:16] Speaker 00:
And if lost profits can be demonstrated, as they were in this case, they're available.

[00:14:21] Speaker 00:
The Congress has determined that for certain areas you can narrow the scope of damages available.

[00:14:26] Speaker 00:
I contend that what ION wants to do is say for 271F, we're going to have a narrower scope.

[00:14:32] Speaker 00:
And they say it's much in their briefs.

[00:14:33] Speaker 00:
You have to look at what's going on at the border, what is the component

[00:14:37] Speaker 00:
supplier under F make?

[00:14:39] Speaker 03:
Well, let's suppose this weren't a 271F case.

[00:14:41] Speaker 03:
It was just a case in which somebody sold a device that was shipped abroad and then used in a way that would infringe if it were in the United States.

[00:14:57] Speaker 03:
How can you get the profits that you would have made from the foreign activity?

[00:15:02] Speaker 00:
You can under 284 in the following scenario.

[00:15:06] Speaker 00:
So if this was 271A and I had made the entire apparatus here in the United States, or any apparatus, and shifted it abroad, the question becomes, one, is there infringement on your hypothetical, yes, under 271A?

[00:15:18] Speaker 00:
Then the question is, what's the harm to the patentee under 284?

[00:15:22] Speaker 00:
And the harm to the patentee- What case says you can get foreign profits?

[00:15:25] Speaker 00:
You can get the fact that the impact on the patentee is extraterritorial.

[00:15:32] Speaker 03:
What case says that in my hypothetical about 271A?

[00:15:36] Speaker 03:
you can get the foreign profits.

[00:15:39] Speaker 00:
Under 271A, whether you start with right height, or you then get to cases that follow on to that that say the location of the sale doesn't impact damages.

[00:15:49] Speaker 00:
So in data scope, lost profits were available, but they weren't proven.

[00:15:53] Speaker 00:
It's only royalty that was granted there, but the court said... What case deals with foreign profits?

[00:15:59] Speaker 00:
Because you can get foreign profits.

[00:16:03] Speaker 00:
Under, happens to be under 271F, there are several.

[00:16:06] Speaker 00:
both in T.D.

[00:16:07] Speaker 00:
Williamson, lost profits for granted.

[00:16:10] Speaker 03:
In under... Let's stay with 271.

[00:16:14] Speaker 03:
What case says that if you sell something to the United States that's infringing, it's shipped abroad under lost profits, you can recover the foreign lost profits?

[00:16:23] Speaker 03:
What case says that?

[00:16:25] Speaker 00:
In the SYNCOR case, infringement's under A and B, and they affirmed loss, this court affirmed lost profits and a royalty,

[00:16:36] Speaker 00:
where the defendant's manufactured and sold the bus converters overseas?

[00:16:40] Speaker 00:
So the question here is you're just like- Yeah, but were the lost profits in the United States or were they from foreign activity?

[00:16:46] Speaker 00:
The lost profits are to the patentee.

[00:16:48] Speaker 00:
Where the sale took place can be abroad.

[00:16:51] Speaker 00:
If you make, under 271A, it's make, use, or sell.

[00:16:54] Speaker 00:
Let's just focus on those three.

[00:16:56] Speaker 00:
If it's manufactured in the United States and sold in the United States, or it's manufactured in the United States and sold abroad, there's still an active infringement, and under 284,

[00:17:06] Speaker 00:
There's nothing that says the harm to the patentee should be reduced.

[00:17:09] Speaker 00:
I think you'd agree with me that the harm to the patentee, if I'm the only maker of a product in the world, I make it, I have a US patent.

[00:17:17] Speaker 00:
And I sell both to US customers and to Canadian customers.

[00:17:21] Speaker 00:
And no one else makes it.

[00:17:23] Speaker 00:
And then someone in this country makes that product here.

[00:17:27] Speaker 03:
What case under 271A says that if you sell something in the United States that is then used abroad,

[00:17:36] Speaker 03:
to infringe a method with a claim that would be infringing if it was in the United States, entitles you to lost profits on the use of law.

[00:17:45] Speaker 03:
I mean, I'm not aware of a case.

[00:17:49] Speaker 00:
I'm not aware of a case that describes it in that manner, Your Honor.

[00:17:52] Speaker 00:
What I'd say is the cases that deal with foreign, with the use of a product that has already been found to be infringing for a US act of infringement, they don't distinguish.

[00:18:03] Speaker 00:
And if ultimately,

[00:18:06] Speaker 00:
the active infringement happens in this country.

[00:18:08] Speaker 00:
This court says, and 284 says, you have to look at making the patentee whole, regardless of where... Let's step back.

[00:18:17] Speaker 00:
Your question of what would happen if it was all in the United States versus abroad.

[00:18:22] Speaker 00:
If the harm to the patentee, if the acts were solely in the US, would be clear.

[00:18:27] Speaker 00:
They would lose their profits and if you could prove them.

[00:18:30] Speaker 00:
If they sell some of those units in Canada instead of in the United States,

[00:18:33] Speaker 00:
And I was previously selling to those, because let's not forget I have to show what for causation that I lost that sale.

[00:18:40] Speaker 00:
Why am I not entitled to get those profits, Your Honor?

[00:18:43] Speaker 00:
So to be clear, your question of is there a case I can point to that specifically says for the ones that are made in the US under A, but then the customer for those sales was abroad?

[00:18:54] Speaker 00:
There actually is one I can think of where I know that's in the damages model, this court seen in

[00:18:59] Speaker 03:
What case discusses that?

[00:19:01] Speaker 00:
No case discusses it in the manner you've asked.

[00:19:06] Speaker 00:
But more importantly, I think for this case, 271F was created for a purpose.

[00:19:12] Speaker 00:
And the purpose was to make the patentee in no different a situation than if the infringement had happened entirely in the United States.

[00:19:20] Speaker 00:
And on 271F, the whole premise is they shift components abroad.

[00:19:26] Speaker 00:
And yet, that's an act of infringement under the Patent Act.

[00:19:29] Speaker 00:
And if Congress wanted to narrow that and say you have to stop at the border or you don't get lost profits, they could have done so under 287.

[00:19:39] Speaker 00:
Congress specifically limits damages under 271 G. There are also limitations certainly for market.

[00:19:45] Speaker 03:
And so- We had a counterpart patent in France, for example, and the activity were in France.

[00:19:53] Speaker 03:
France could give a remedy for the foreign

[00:19:56] Speaker 03:
activity, right?

[00:19:57] Speaker 00:
In that situation, I think you could choose your remedy, but of course you could never get double compensation or double counting.

[00:20:03] Speaker 03:
Who says?

[00:20:06] Speaker 00:
Well, I'd say it's a policy matter first off, but there's nothing that suggests you have... What is it in the U.S.

[00:20:11] Speaker 03:
patent law that says you can't get recovery both in France and the United States?

[00:20:15] Speaker 00:
It doesn't say that in the U.S.

[00:20:16] Speaker 00:
patent law.

[00:20:18] Speaker 00:
But, so, well, no, I'll back up a step.

[00:20:21] Speaker 00:
Certainly it's not a patent only issue.

[00:20:22] Speaker 00:
There are cases from the Supreme Court, Birdsell,

[00:20:25] Speaker 00:
Glenair goes into this, you can't get double recovery.

[00:20:28] Speaker 04:
So election or remedies.

[00:20:29] Speaker 00:
Correct.

[00:20:30] Speaker 00:
And so the idea that whether it could be done, let's also look at these patents.

[00:20:36] Speaker 00:
These are patents that are involved in looking for reservoirs on the high seas.

[00:20:41] Speaker 00:
Essentially, you're in no one's country.

[00:20:43] Speaker 00:
So it's an apparatus that's shipped from the United States, and Iron does it abroad.

[00:20:48] Speaker 00:
There are US patents that cover that, and they chose to manufacture these components.

[00:20:52] Speaker 03:
Where was the contract entered into for the foreign activity?

[00:20:55] Speaker 00:
Well, the question that matters for 271F is the contract to sell the components.

[00:21:01] Speaker 03:
I mean, you say that this happened on a high fee, so it's not subject to anybody else's jurisdiction.

[00:21:06] Speaker 03:
Where was the contract entered into for an activity?

[00:21:09] Speaker 00:
They're each different depending on who the two sides, the oil company on one side, the surveying company on the other side, which under 271F, if you supply components to be assembled or you cause them to be supplied,

[00:21:23] Speaker 00:
You are an infringement.

[00:21:24] Speaker 03:
Well, the contractor performed the services.

[00:21:26] Speaker 03:
Where were those contracts entered into?

[00:21:29] Speaker 00:
I don't believe it's in the record, Your Honor.

[00:21:30] Speaker 00:
There were multiple jobs shown.

[00:21:32] Speaker 00:
They were proven up.

[00:21:32] Speaker 00:
This wasn't an argument anyone made, so there wasn't a debate over what law governs the particular contractor.

[00:21:41] Speaker 00:
With respect to the premise of damages, whether it's reasonable royalty or lost profits, but at base, the proper metric is harmed to the plaintiff.

[00:21:50] Speaker 00:
There's no argument by ion.

[00:21:53] Speaker 00:
that we have not suffered this harm.

[00:21:55] Speaker 00:
They went into it knowing, indeed, exactly what harm we would suffer, not only on the intent side, but specifically identifying the damages we'd suffered, the suggestion we don't compete, we're not entitled to lost profits.

[00:22:08] Speaker 00:
Jury heard all this evidence.

[00:22:10] Speaker 00:
JA8079 is their business plan.

[00:22:12] Speaker 00:
Their business plan specifically says, only Western GECO has this technology.

[00:22:18] Speaker 00:
We're gonna offer this technology.

[00:22:19] Speaker 00:
They say,

[00:22:21] Speaker 00:
We don't have any intention to sell it to any of the contractors, ergo, we're not going to license.

[00:22:27] Speaker 00:
And they say, today, oil companies have no alternative to their.

[00:22:31] Speaker 01:
Can I turn you to the assignment issue?

[00:22:33] Speaker 01:
When were these patents assigned?

[00:22:35] Speaker 00:
These patents were assigned to Western GECO in 2000 as part of the NFA and the TTA master formation agreement and tech transfer.

[00:22:43] Speaker 00:
They were assigned before.

[00:22:43] Speaker 01:
Then why is there an assignment document in the record dated 2001 that's what you submitted in support

[00:22:51] Speaker 01:
of ownership to the patent office.

[00:22:53] Speaker 00:
For the same reasons that ultimately the district court found, the 2001 assignment is both a confirmation of prior assignment and an assignment of any future rights.

[00:23:02] Speaker 01:
In the language of... Well, if it would have been a confirmation of an assignment to Kiko, or however you say it, you would think that it would have actually assigned it to them, but it didn't.

[00:23:13] Speaker 01:
It assigned them to STC.

[00:23:15] Speaker 01:
So I understand.

[00:23:16] Speaker 01:
So here's my problem with this assignment issue.

[00:23:18] Speaker 01:
It seems to me that you have

[00:23:20] Speaker 01:
perhaps a valid argument based upon chain of title.

[00:23:24] Speaker 01:
If this guy worked for these companies by right of his employment agreement or maybe some assignment in the past, he assigned those prior to this whole merger and everything where all these things were done.

[00:23:37] Speaker 01:
That's fine.

[00:23:38] Speaker 01:
That's not what you represented to the patent office when you filed this patent.

[00:23:42] Speaker 01:
What you represented to the patent office was that the assignment occurred in 2001 based upon this document.

[00:23:49] Speaker 01:
So are you now saying this document isn't the valid assignment, that it's something else?

[00:23:55] Speaker 00:
There is an earlier assignment that the witnesses testified to of their rights.

[00:23:58] Speaker 00:
This document is a confirmation of the assignment.

[00:24:01] Speaker 00:
It was represented in the Patent Office.

[00:24:02] Speaker 01:
But it's not a confirmation of the assignment because it doesn't reference the same party that you say they were assigned to.

[00:24:08] Speaker 00:
Well, if we step back to the corporate form, and I think to Judge Wallach's point, this is a fact question.

[00:24:14] Speaker 00:
And so the judge looked at that.

[00:24:15] Speaker 01:
Are you saying that there's testimony that these were assigned

[00:24:18] Speaker 01:
to STC previously, and then by operation of this merger that it went to GECCO?

[00:24:23] Speaker 00:
The testimony is they were assigned to their employer at the time, GECO Pracla, or Western GECO, which is what it became called.

[00:24:30] Speaker 00:
And then there are documents that aren't suited in the record that have the transfer from GECO Pracla to STC.

[00:24:35] Speaker 01:
I have a really hard time with this argument.

[00:24:37] Speaker 01:
I mean, don't we generally prefer written assignments rather than all of this kind of unsubstantiated testimony?

[00:24:44] Speaker 00:
I agree.

[00:24:44] Speaker 00:
Indeed, a written assignment is required.

[00:24:46] Speaker 00:
It's not a preference.

[00:24:48] Speaker 01:
And we don't have a written assignment documenting what you're saying.

[00:24:51] Speaker 00:
Here's what we have.

[00:24:52] Speaker 00:
And I think it's important to understand the context of why this is what we have.

[00:24:56] Speaker 01:
Let me ask you this.

[00:24:58] Speaker 01:
If there wasn't a prior assignment, if this is the assignment, this assignment is to STC.

[00:25:05] Speaker 01:
Correct.

[00:25:05] Speaker 01:
Then all that previous corporate merger doesn't matter.

[00:25:08] Speaker 01:
That happened before this assignment to STC.

[00:25:12] Speaker 01:
So STC is the owner of the patents if we read this as the valid legal assignment.

[00:25:17] Speaker 00:
I don't agree.

[00:25:18] Speaker 00:
I think obviously you understand my view and that there's an assignment before that.

[00:25:22] Speaker 00:
But to your hypothetical, if that's the only assignment and there was no other, then the situation at hand would be were there the prior agreements in those agreements did STC assign its rights at the time or in existence in the language of the transfer to Western GECO from STC.

[00:25:40] Speaker 00:
This is the TTA as well as the MFA.

[00:25:43] Speaker 00:
And I'll note, I want to get back to it in a second, but the MFA

[00:25:46] Speaker 00:
the Master of Forensic in 2000, lists this patent.

[00:25:49] Speaker 00:
It actually lists this family of patents on it.

[00:25:52] Speaker 01:
OK, but that's the problem.

[00:25:54] Speaker 01:
If that patent was assigned previously, then Dr. Fiddleston had no property to assign in 2001.

[00:26:03] Speaker 01:
So that's another variant of saying that this 2001 document really isn't the effective assignment.

[00:26:09] Speaker 01:
But that's the problem.

[00:26:10] Speaker 01:
If we look at this as the effective document, I don't understand how any of that prior stuff

[00:26:14] Speaker 01:
relates to this document.

[00:26:16] Speaker 00:
Because the tech transfer agreement and the CSA refer to any rights that are obtained or any rights in existence at the time.

[00:26:24] Speaker 00:
One says anything in existence, and one says any rights that are obtained.

[00:26:28] Speaker 00:
And so in the event that that was the scenario, and the district court judge looked at this also, because he heard this argument, he said, I don't give it any weight.

[00:26:36] Speaker 00:
I've looked at the evidence.

[00:26:37] Speaker 00:
He looked at that evidence, which under Sanofi is not a question of law de novo.

[00:26:41] Speaker 00:
It still gets deference.

[00:26:42] Speaker 00:
So the district court judge, he said,

[00:26:44] Speaker 00:
I've looked at that, and it transfers anything they get their hands on.

[00:26:49] Speaker 00:
So that would cover it, even if it only came to them in 2001.

[00:26:52] Speaker 00:
The tech transfer agreement says anything in existence, and there's no debate the rights were in existence, it had been invented already, first off.

[00:27:00] Speaker 00:
And under the cost sharing agreement, it would be because anything that they ultimately get in that space, and there's no debate it's in that space, was transferred.

[00:27:10] Speaker 00:
So it can be a transfer of anything I get.

[00:27:12] Speaker 00:
It's no different than an employee agreement.

[00:27:14] Speaker 00:
If I invent it later.

[00:27:15] Speaker 01:
So you're saying these prior cost sharing agreements and the like said any kind of patent rights you have now or you obtain in the future are owned by Western Gecko.

[00:27:26] Speaker 00:
The cost sharing agreement in 2000 says any rights which are obtained.

[00:27:31] Speaker 00:
The tech transfer agreement says any IP in existence at the time.

[00:27:34] Speaker 00:
It doesn't matter who owns it, it's viable.

[00:27:37] Speaker 01:
There's also, this is not.

[00:27:38] Speaker 01:
Right, but that latter sentence can't be a transfer of this

[00:27:44] Speaker 01:
Or it would render this document in effect because if the IP was in existence at the time and it was owned by one of those companies and transferred to Western Gecko, then it wasn't owned by Dr. Biddleston.

[00:27:58] Speaker 01:
So he didn't have the authority to reassign it in 2001.

[00:28:01] Speaker 01:
Do you see what I'm getting at?

[00:28:02] Speaker 00:
I do see what you're saying because you're saying it becomes a circular argument.

[00:28:05] Speaker 00:
It's inconsistent.

[00:28:06] Speaker 01:
It's completely inconsistent.

[00:28:08] Speaker 00:
The 2001 assignment relates to

[00:28:11] Speaker 00:
At some level, it's probably a belt and suspenders exercise, but the context of why we have these agreements and no testimony... But it seems to assume that the inventor still owned it, right?

[00:28:21] Speaker 00:
Although if you read the actual agreement, it says, I have done so, or I will do so.

[00:28:25] Speaker 00:
It's referring to actions he has already taken, or the actual language of it says... But he never made an assignment to Western Gecko.

[00:28:35] Speaker 00:
He did, his employment agreement, and he testified to this.

[00:28:38] Speaker 00:
he had assigned as of the nature of his employment for Geco Prakla.

[00:28:43] Speaker 01:
Both of these individuals were... But again, if that's the case, then this is not a valid document.

[00:28:48] Speaker 01:
If that's the case, this document is completely unnecessary.

[00:28:52] Speaker 00:
I agree.

[00:28:52] Speaker 00:
It is unnecessary.

[00:28:54] Speaker 01:
Your question is... But that's the problem.

[00:28:56] Speaker 01:
You're asking us to ignore this document when this is the very document you submitted to the Patent Office to show ownership.

[00:29:04] Speaker 01:
You didn't submit the chain of title argument to the Patent Office to show ownership.

[00:29:09] Speaker 01:
I'm not saying... You would be on much firmer ground if you hadn't created this document, which I think seems to be probably an attempt

[00:29:17] Speaker 01:
to shore up what may have been a weak chain of title argument.

[00:29:20] Speaker 00:
This is not a situation where it's a non-protonic assignment right before you file a suit.

[00:29:24] Speaker 00:
This is years earlier in the course of a merger arrangement.

[00:29:27] Speaker 00:
There's no question that this is all one entity.

[00:29:29] Speaker 00:
This is not a case where you have, does he own it over here or does he own it over here?

[00:29:33] Speaker 00:
This is a corporate chain of events.

[00:29:35] Speaker 00:
And the language of the assignment you're pointing to says, this is J812.

[00:29:40] Speaker 00:
Right, I read it.

[00:29:42] Speaker 00:
I know.

[00:29:43] Speaker 01:
It also says that he warrants that he has the right

[00:29:45] Speaker 01:
to make the assignment.

[00:29:47] Speaker 01:
And if he had already given it away, he didn't have the right to make that assignment.

[00:29:51] Speaker 00:
Can I make one more point on this, which is I think it's important to remember the context of why we're here and how we're in this situation.

[00:29:58] Speaker 00:
This was pled and never disputed that these patents were owned by Western GECO.

[00:30:03] Speaker 00:
The witnesses were deposed, and they testified that they had signed it their employer.

[00:30:07] Speaker 00:
And their argument at base is there's no best evidence.

[00:30:09] Speaker 00:
You don't have the best evidence.

[00:30:10] Speaker 00:
But their employer was not Western GECO.

[00:30:12] Speaker 00:
Their employer was GECO?

[00:30:14] Speaker 04:
Which was a predecessor in interest.

[00:30:17] Speaker 00:
It is a predecessor.

[00:30:18] Speaker 00:
And the agreement in 1998 that the judge found when he looked at this, transferred it to STC, is from GECO Pracla, your honor.

[00:30:26] Speaker 00:
So their employer was GECO Pracla.

[00:30:28] Speaker 00:
There's no dispute about the testimony.

[00:30:29] Speaker 00:
It wasn't objected to.

[00:30:31] Speaker 03:
And the fact of the matter is that they had... So the idea is that the 2001 assignment is saying, we earlier assigned it to a predecessor corporation of Western DECO.

[00:30:42] Speaker 00:
It is, because at the time, your honor, it was GicoPracola, then it was Schlumberger's A Technology Corporation.

[00:30:47] Speaker 00:
It reads that STC is desirous of confirming its ownership of those rights.

[00:30:54] Speaker 00:
And it had those rights.

[00:30:55] Speaker 01:
So STC just confirmed its rights in 2001 that it owns the patent.

[00:31:01] Speaker 00:
That it had been given those rights.

[00:31:04] Speaker 00:
And by everyone's agreement, there are multiple tech transfers from STC.

[00:31:09] Speaker 01:
I don't understand how

[00:31:11] Speaker 01:
is what you meant was to reconfirm that Western Gecko was the owner of the patent, which is what you put on the face of the patent application.

[00:31:19] Speaker 01:
This assignment didn't say Western Gecko had them.

[00:31:21] Speaker 00:
Here's the rub to your question, which is, if this issue had been presented in any form or fashion, we could have gone into these, but we didn't have the ability to post trial.

[00:31:31] Speaker 01:
But you know, a standing can be raised at any time.

[00:31:33] Speaker 00:
It can, but you can.

[00:31:34] Speaker 00:
This court and the Supreme Court said you can stipulate the facts, and you can admit facts that ultimately control that decision.

[00:31:40] Speaker 00:
They did.

[00:31:41] Speaker 00:
But as another matter, Ajinomoto is a case in this court with the original transfer from the inventor.

[00:31:47] Speaker 00:
Doesn't exist.

[00:31:48] Speaker 00:
No one has it.

[00:31:48] Speaker 00:
But everyone knows they worked for the entity.

[00:31:51] Speaker 00:
And there was no dispute as to the law at the time that you could have an agreement like that with your employer.

[00:31:56] Speaker 00:
And it was ultimately found on a record there was no dispute that they worked there at the time.

[00:32:00] Speaker 00:
And the testimony came in unobjected to and unreported as to who their owner is.

[00:32:04] Speaker 00:
So there's no best evidence argument.

[00:32:06] Speaker 00:
So I contend that at worst on the standing issue,

[00:32:11] Speaker 00:
it would be an issue that should be resolved factually.

[00:32:14] Speaker 00:
The district court judge did that.

[00:32:16] Speaker 00:
He was presented if they wanted other evidence or other discovery.

[00:32:19] Speaker 00:
The court said, I've looked at your argument, I've looked at yours.

[00:32:21] Speaker 00:
I've looked at the witness testimony.

[00:32:23] Speaker 00:
I've looked at all the agreements and the underlying intervening between them.

[00:32:27] Speaker 00:
But he didn't address this inconsistency, did he?

[00:32:28] Speaker 00:
He did.

[00:32:29] Speaker 00:
The judge specifically addressed the argument of the 2001 assignment in his decision.

[00:32:34] Speaker 00:
It's J, six, and seven, and eight.

[00:32:36] Speaker 00:
And he looked at this issue.

[00:32:37] Speaker 00:
And he said, there is the earlier, there's the cost sharing agreement.

[00:32:41] Speaker 00:
which would have assigned the rights they obtained.

[00:32:47] Speaker 00:
And so it's a question of whether or not it's a clear error.

[00:32:51] Speaker 00:
If not, I think it should be fine.

[00:33:01] Speaker 02:
Mr. Healy?

[00:33:03] Speaker 02:
Your Honor, I'd just like to say two things about each of these points.

[00:33:09] Speaker 02:
First of all, follow up on the assignment.

[00:33:11] Speaker 02:
The assignment does not mention Western Cheat Bill anywhere.

[00:33:14] Speaker 01:
Can you go back to the prejudice issue on the F2 versus the F1?

[00:33:19] Speaker 01:
Because it seems to me that that, I mean, let's assume that the F1 instruction in the summary judgment was wrong because it didn't require some kind of intent.

[00:33:29] Speaker 01:
Explain to me again what the standard is for determining prejudice and why it's met here.

[00:33:34] Speaker 01:
Because you seem to concede that the jury was properly

[00:33:38] Speaker 01:
instructed on how to find an infringement under F2.

[00:33:43] Speaker 02:
The prejudice, Your Honor, first of all, is the natural prejudice that any trial lawyer has experienced that the judge is telling the jury and the other side is allowed to tell the jury from beginning to the end that they've been already found to be an infringer.

[00:33:58] Speaker 02:
That's as damning as saying someone's already been convicted of one of the offenses they're charged with.

[00:34:04] Speaker 02:
So you've got that prejudice.

[00:34:05] Speaker 02:
Putting that aside, though,

[00:34:07] Speaker 02:
You've also got the prejudice that you're doing the same product, same transaction, same party, same invoices, and they're not being told to keep these things separate.

[00:34:22] Speaker 02:
And the normal inclination of any lay person is if you're dealing with two things that are the same, you're going to treat them the same.

[00:34:31] Speaker 02:
And we tried to prevent that from happening in multiple stages.

[00:34:34] Speaker 02:
Western GECO opposed it at every stage.

[00:34:41] Speaker 02:
If I can talk just a couple of quick things about each of the assignment and the lost profits.

[00:34:49] Speaker 03:
What are we supposed to do if we do conclude that there's an inconsistency between the 2001 purported assignment and this alleged chain of title?

[00:35:02] Speaker 03:
What are we supposed to do about that?

[00:35:04] Speaker 02:
You would dismiss the cases to the Biddleston patent.

[00:35:08] Speaker 01:
Can we send it back?

[00:35:09] Speaker 01:
Because it seems to me that the record is not sufficiently developed on this point.

[00:35:14] Speaker 01:
You raised it really late.

[00:35:17] Speaker 01:
And obviously, you can raise it at any point in the proceedings.

[00:35:19] Speaker 01:
But it certainly was raised really late.

[00:35:22] Speaker 01:
And it does seem that there are inconsistent theories here.

[00:35:27] Speaker 01:
But why wouldn't a better course to be given that you released it so late to allow discovery or at least some kind of further argument on standing?

[00:35:37] Speaker 02:
There's two reasons, Your Honor.

[00:35:38] Speaker 02:
First of all, the best interpretation of what the parties consider the document to be is how they treated it.

[00:35:46] Speaker 02:
And STC used this document, not Western GECO, STC to file the original patent in their name, prosecute it in their name, fill out the cover pages in the records of the Patent Office in their name, and to this day, the database in the Patent Office shows that the parent patent is owned by STC.

[00:36:07] Speaker 02:
That shows they didn't intend that Western GECO owned this patent at the time of this assignment.

[00:36:15] Speaker 02:
And the assignment itself says that the inventors are assigning it free and clear.

[00:36:20] Speaker 02:
That's, you know, an attestation that this is a going forward assignment.

[00:36:28] Speaker 02:
The second thing, Your Honor, is there's no need to remand for this because Dr. Biddleston, who signed this,

[00:36:37] Speaker 02:
He's a senior executive with these people.

[00:36:40] Speaker 02:
They could have just put in a declaration in response to our motions and said, this is what happened.

[00:36:48] Speaker 02:
This is what I understood.

[00:36:49] Speaker 02:
I did sign something.

[00:36:51] Speaker 02:
They could have gotten some records to show who owned it.

[00:36:55] Speaker 02:
The PCT application that Mr. Lacosteo refers to is actually assigned to GECO AS, a Norwegian company, not GECO Proclas.

[00:37:07] Speaker 02:
And that is in our brief, and it's also, if you look at JA01349, well, you'll see, actually, if you look at JA013149, you'll see that this was prosecuted by Schlumberger Technology Company, but the PTC application, you'll see, was first signed to Gecko AS and then other Gecko companies.

[00:37:36] Speaker 02:
but never to Gecko Procla.

[00:37:39] Speaker 02:
Just as Mr. Hills didn't never testify he worked for Gecko Procla.

[00:37:45] Speaker 02:
He said he worked for Gecko, which I'm assuming, since he worked in Norway, was probably Gecko AS, but I don't know.

[00:37:52] Speaker 02:
There's nine companies that have the word Gecko in the title, and they're all separate entities.

[00:37:58] Speaker 02:
The final thing, if I may, and I know I'm over my time, if I could have another moment,

[00:38:03] Speaker 02:
Just to comment on the loss profit, there is no case that says you can get damages for exploiting a U.S.

[00:38:16] Speaker 02:
patented invention outside of the U.S.

[00:38:20] Speaker 02:
for use of that.

[00:38:22] Speaker 02:
That has been the law in the U.S.

[00:38:23] Speaker 02:
for over 150 years since the Brown case in 1857, which was reaffirmed in Microsoft.

[00:38:30] Speaker 02:
Power integrations

[00:38:32] Speaker 02:
rejected this exact argument.

[00:38:36] Speaker 02:
And here, if they had been saying we made something overseas with these components, that somehow they were entitled to leapfrog from components to maids, I don't know what would have happened.

[00:38:49] Speaker 02:
But their damages were for our customers to use instead of us.

[00:38:54] Speaker 02:
Thank you, Your Honor.

[00:38:55] Speaker 02:
I appreciate your time.

[00:38:59] Speaker 03:
And since the cross appeal wasn't addressed, there's no further rebuttal argument.

[00:39:03] Speaker 03:
So the case is submitted.

[00:39:05] Speaker 03:
We thank both counsels.